Section 8(2) Explained: The Three-Step Test for Likelihood of Confusion in Singapore

When two trade marks come into conflict in Singapore, the central question is whether there is a likelihood of confusion on the part of the public. Under Section 8(2) of the Trade Marks Act, a mark shall not be registered if it is similar to an earlier mark covering identical or similar goods or services and confusion is likely to result. Unlike the European “global appreciation” approach, Singapore applies a distinctive step-by-step test — a structured, sequential analysis endorsed by the Court of Appeal in the landmark Staywell decision.

The Legal Basis: Section 8(2) of the Trade Marks Act

Section 8(2) prohibits the registration of a trade mark if it is identical to an earlier mark and is to be registered for similar goods or services, or if it is similar to an earlier mark and is to be registered for identical or similar goods or services — where there exists a likelihood of confusion on the part of the public.

This provision is the primary ground for opposition proceedings in Singapore. It protects consumers from being misled about the origin of goods or services, and it protects the rights of earlier mark owners against encroachment by similar later filings.

The Step-by-Step Approach

The Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 endorsed the step-by-step approach as the correct framework for Singapore. This approach, first adopted in The Polo/Lauren Co v Shop In Department Store [2006] 2 SLR(R) 690, requires three elements to be assessed sequentially:

• Step 1: Are the marks similar?
• Step 2: Are the goods or services identical or similar?
• Step 3: If both thresholds are met, is there a likelihood of confusion?

The first two elements are assessed individually before the third element is considered “in the round.” If either of the first two steps fails, the inquiry ends and the opposition under Section 8(2) does not succeed.

Step 1: Similarity of Marks

The comparison of marks is conducted on a mark-for-mark basis, without reference to external factors such as the actual marketplace conditions or how the marks have been used. The analysis considers three dimensions:

Visual Similarity

This examines the appearance of the marks, including the length, structure, shared letters or sequences, and dominant design elements. The assessment looks at the marks as a whole, while bearing in mind the distinctive and dominant components. In Singapore, where English text is typically read left to right, the beginnings of word marks tend to carry greater weight in the visual impression.

Aural Similarity

This assesses how the marks sound when spoken aloud, considering the number of syllables, rhythm, stress patterns, and shared sounds. Aural similarity is particularly relevant for services that are ordered verbally, such as in hospitality or food and beverage settings.

Conceptual Similarity

This evaluates whether the marks convey the same or a similar idea or meaning. Two visually different marks may be conceptually identical — for example, a word mark “LION” and a device mark depicting a lion. The Court of Appeal in Staywell confirmed that conceptual similarity must be assessed by reference to the ideas that the marks convey.

The three aspects of similarity are meant to guide the inquiry, and trade-offs can occur among them. A mark may be visually dissimilar but aurally and conceptually similar, and still be found similar overall.

Step 2: Similarity of Goods or Services

This step compares the goods or services for which the marks are registered or applied for. The assessment considers factors such as the nature of the goods, their intended purpose, their method of use, whether they are in competition or complementary, and their usual channels of distribution.

Importantly, the fact that goods are classified in the same Nice Classification class does not automatically make them similar. Conversely, goods in different classes may still be found similar if they share relevant characteristics.

Step 3: Likelihood of Confusion

Only if both the marks and the goods or services are found to be similar (or identical) does the analysis proceed to the third step. At this stage, the tribunal or court looks at the matter “in the round”, considering:

• How similar the marks are.
• How similar the goods or services are.
• Given these findings, how likely the relevant segment of the public is to be confused.

Confusion includes not only direct confusion — where the consumer mistakes one mark for the other — but also indirect confusion, where the consumer believes the marks belong to the same brand family or that the businesses are economically linked.

The Role of Distinctiveness

The distinctiveness of the earlier mark plays a role in the analysis. A mark with greater technical distinctiveness — whether inherent or acquired through use — enjoys a higher threshold before a competing sign will be considered dissimilar to it. Conversely, marks composed of weak or common elements receive a narrower scope of protection.

The Court of Appeal in Staywell confirmed that distinctiveness is an “integral factor” in the marks-similarity inquiry.

How Singapore Differs from the EU

A critical distinction between Singapore and EU trade mark law lies in the methodology. The EU applies a “global appreciation” test where all factors — mark similarity, goods similarity, and confusion — are assessed together in an integrated evaluation. Singapore’s step-by-step approach treats each factor as a separate threshold that must be crossed before proceeding to the next.

Additionally, in Singapore’s opposition proceedings, the court considers the full range of notional and actual uses of both marks. This means the assessment is broader than a snapshot of current market conditions — it looks at all the ways the marks could legitimately be used within their specifications.

Strategic Implications

• For applicants: When choosing a mark, ensure it is not only visually distinct from earlier marks but also aurally and conceptually different. A change in one dimension may not be enough if the other dimensions remain similar.
• For opponents: Build your case across all three dimensions of similarity. Even if visual similarity is weak, strong aural or conceptual similarity can carry the day.
• For both parties: The step-by-step approach means that if you can defeat similarity at Step 1 or Step 2, the confusion inquiry never arises. Focus your arguments where they are strongest.

Common Mistakes

• Focusing only on visual differences: Adding a logo or design element to a word mark does not guarantee safety if the word elements remain aurally or conceptually similar.
• Assuming different price points prevent confusion: The Court of Appeal in Staywell explicitly rejected the argument that different hotel star ratings negated confusion.
• Ignoring the dominant element: The average consumer tends to focus on the most distinctive part of a mark. If the dominant element is shared, the overall impression may be similar despite differences in secondary elements.
• Confusing “association” with direct confusion: Even if consumers would not buy the wrong product, a belief that the marks belong to the same brand family is sufficient for a finding of confusion.

Key Takeaway

Likelihood of confusion under Section 8(2) is assessed through a structured three-step test that is unique to Singapore. The marks are compared across visual, aural, and conceptual dimensions; the goods or services are assessed for similarity; and only then is the question of confusion addressed in the round. This systematic approach demands that applicants build brands that are genuinely distinct across all dimensions — not just visually different on paper.